Posted
by
Hemos
on Wednesday January 13, 1999 @08:37AM
from the next-they-will-want-yaha dept.

Ben writes "In the never-ending "big corporation wants little guy's domain" saga Yahoo! has threatened legal action against YaHooka, a marijuana information site, unless they hand over all yahooka.* domains. The skinny is here. I found this on bud.com. "

The pricing structure is as follows: 2 letter.COM domains start at $7,500.00 USD 3 letter.COM domains start at [DEL: $3,000:DEL] Holiday sale $2,000.00 USD .... it just goes on...man this crap is disgusting. I think there needs to be a new rule on domains. Any domains found to be registered SOLELY for the purpose of "placeholding" for the purpose of sale at higher prices (hmm perhaps call it scalping) should be revoked immediatly with NO refund of fees. (This would not stop a company from reserving registering a domain they arn't using yet if it is for their own use/ or their trade mark)

hmm you know...that does sound like a good idea. Who is controlling domains these days (like .COM)? I think I have a suggestion:)

Indeed. We may find a corporation useful, or want services it may provide.. but a corporation is only a friend to money. Never, *ever* make the mistake of assuming a corporation has your best interests at heart. It's very rarely so.

I've been using Yahoo since it's earliest days, and have a good friend who was one of their first employees. But they've gone off the deep end. YaHooka is an obvious parody, and the Supreme Court of the United States has clearly stated that parody has a special, protected place in a democracy. As of this moment, I am no longer using Yahoo...until the apologize to YaHooka.

Imagine yourself being wronged by some large company with deep pockets for lawyers. Let's say that for whatever reason, you know you are right, but you aren't 100% convinced you can prove it in court. Say for example, you are 90% convinced you would win. In a "loser pays" system, that small 10% chance that you might lose is going to scare you away from the case, because *you* can't afford to pay for *their* lawyers, while *they* would have no problem paying for *your* lawyers.

Cases would be decided out of court by FUD. If you have even a glimmer of doubt about the likelyhood of winning, you would never want to set foot in the courtroom.

If companies can sue just because you are using a similar name to their name, then where does the dividing line lay?

How close do two words have to be for it to be an infringement? Do they have to prove intent as well - so an accidentally similar name would not be a suitable cause for a case? These questions must be answered if the courts are going to allow this kind of thing to continue.

If these questions are inherently unanswerable, then the courts should not be taking these cases at all.

As far as I understand it, trademark law requires the holder to take legal steps necessary to defend a granted trademark. If other organizations begin using your trademark to the point where it becomes diluted, your rights to that trademark are substantially diminished.

If you don't show that you're taking steps to defend your trademark, you lose it.

I do agree that in this case, "Yahooka" and "Yahoo" are different enough that it's unlikely Yahoo will win a real court case, unless Yahooka simply relents under pressure.

Though I'm starting to get kind of annoyed by all of the lawyer bashing going on here. Most of the time, these lawyers are following instructions given to them by their boss. Something like: "Hey, this marijuana site is using a domain that looks like ours. Stop them." While an ethical lawyer might object and say there's no real case here, they're still employees of the company, serving "the company's" will. If all lawyers suddenly became compassionate, unwilling to hurt the "little guy", allowing anyone to have a field day with their company's trademarks, what do you think would happen? They would get taken advantage of. "Little guys" would step up, take advantage of that "kindness" and profit from The Company's work. Companies like this HAVE to be a little overprotective, because, let's face it, if they're winning every single case in their efforts to protect their trademarks, perhaps they could be doing a little more? The fact that they take on cases and lose a manageable percentage tells me that they're working right on the line, and doing everything they can to ensure their company's wellbeing. If they were to lose a significant number, then I would say they're being a bit overprotective and overzealous. That line between winning and losing is set by the judicial system and their interpretation of the legislation. If you have a complaint there, take it up with those branches of the government.

So when cases like this come up, and you think "damn they're picking on the Little Guy again," try and look at it from the company's point of view. Perhaps write them a letter or an e-mail and ask for their side of the story. Suggest to them any alternatives you can think of. If nothing else, tell them you hate them and will never use their product if they continue to push the issue. (This can work!) If, after they respond (assuming they do) you still think the whole situation sucks, don't be so quick to blame all of the Evil Lawyers and stick it where it belongs: The Company. Now, if the evil company actually WINS the case, and you STILL think it sucks despite the judge's reasoning behind his ruling, that's when you go complaining to your legislature.

Will you still think all lawyers suck when your child is hit by a car and you're forced to sue for damages? Lawyers are working for their clients. They aren't saying, "Hey, man, you can easily double the amount of money you're asking.. let's stick 'em where it hurts!"

As for lawyers not saying "you can make more, stick 'em where it hurts", they do exactly that. I have known several people that hired lawyers for various reasons after being in some sort of accident, and without exception they were advised by their lawyers to exaggerate the extent of their injuries (or in one case to claim one that didn't exist) for the purposes of a larger settlement. Note that I have no more respect for the people who followed this advice than I do for the attorneys themselves, but the general consensus among them was that this is normal procedure and everyone accepts it as such.

Did the lawyer just volunteer that information, or did the client ask them how they could get the most possible money out of it?

The two lawyers I've dealt with were relatively honest and fair about things... If sickens me to think that this practice is considered normal procedure. If my lawyer started telling me all these ways to cheat my way into getting more money out of a case, I really don't think I would want to take advantage of that. In fact, I'm tempted to say now that I would fire a lawyer who behaved like that.

I just think that's very unethical.

To address this, the school instituted a program whereby if the student would sign a contract that said they would only do certain types of work (public defender, non-profit orgs, etc) and limit their income to $35,000 per year for the first x number of years after graduation (it was either 3 or 5), the school would give them their education for free. Note that this was all inclusive - tuition, board, etc. In the two years the program had been in effect (and all incoming students are made the offer) not one single person had signed on. Not one.

That just seems insane to me. I think I could live relatively comfortably on 35k/year. Free tuition? I would certainly want to take advantage of that.

Maybe there's something else in the plan that's making the offer less appealing?

Why didn't they register the domain name themselves? If they really wanted to protect their interests, they should have registered every domain name which they thought could be seized--otherwise it's horribly unfair. "Oh, so you want it, eh? Well, too bad, I didn't want it before, but I want it now, and I get it. muhahahah!"

I don't think they have a chance at a dilution argument. The services provided by Yahoo! and YaHooka aren't similar enough.

Of course, the problem is, Yahoo! doesn't have to be right. They just have to be more able to afford court costs than the little guy. This is where our legal system royally sucks.

After running ML.ORG for so long I know a good deal about the whole domain name issue. There is no trademark dilution here, as someone mentioned. Yahoo has no need to 'defend' their trademark rights in this case since there is no dilution. They went after this company since they didn't like what they were saying.

There is also the situation that trademarks are based by 'class' -- ie you can not trademark a word (few exceptions, like made up words) for EVERYTHING. LIke 'yahoocake.com' which obviously is not in the same business as 'yahoo.com'. Going down that argument, yahooka.com is a different class than yahoo.com. Legally, they are ok.

Of course, as others have pointed out, it's all about money. Deeper pockets. I too, have sent a letter to Yahoo, telling them that I've been a user since akebono.cs.stanford.edu days, and if they don't quit their stupid lawsuit, they can be sure I will never visit their site again.

Companies like Yahoo live on one single thing only: Net traffic. It's very easy to show Yahoo a token of our consideration: from today I remove every link I have to Yahoo and I'm not going to use their web site for the time being.

I have no interest in marijuana but this kind of actions is ridicolous and has to be punished. Avoid Yahoo and ask your friends to do the same.

You think for a moment that lawyers would support the "little guy"??? If your paycheck depended on you getting 10% of $1,000,000 or 10% of nothin - what would you do? The problem is the system. It rewards the folks who are most able to buy justice. Damn, I should have gone to law school, I thought there was honor in learning a trade.

Like most others here, I think this sucks. There is obviously no chance of anyone confusing Yahoo with YaHooka. I say we let Yahoo know that we don't like this. Here's a list of Yahoo's executives and the URL where I found it. Their email addresses are not listed, but if I find them I'll post them here. There are a couple of feedback forms on their site, too. I've also looked up the companies phone number and the snail mail address, for those who figure their "two cents worth" is worth 32 cents or more.

Another example of a Big Company trying to scare the little guy. Did anyone else notice they only gave Yahooka 4 days to respond? That in itself is not right. I thought legally, they had 30 days to respond. Does anyone know?

Like yahoo or not, domain squatting has made a mess of the web. its not fair that someone can go out and buy up every conceivable permutation of a company's brand name and then blackmail them to get it back.

They can "vigilantly defend their trademark" without these kind of scare tactics. No court would ever force yahooka to give their domain to yahoo.. they might force them to stop using it.. but it in no way *belongs* to Yahoo. A simple 'Please put this disclaimer and acknowledge in your site that this is not associated with yahoo.com' would have been just fine.

But no, they have to sick the attack dogs on em... so much for me using yahoo.

Pretty pathetic that Yahoo! (TM) has to go to court to get their grubby little hands on a domain name. Can't they just buy them out like every other greedy corporation that is out there would do?

I don't think this is so much a trademark issue as it is one to get something for next to nothing. I mean, sure it will cost them money for their lawyers, and the PR department will have to work overtime to make up for the scene they created. Oh well, that's big business for you...

By the way, how could they trademark a name that I use for my..... um, nevermind!

A company called Metro Global owns the domain amazingsex.com [amazingsex.com]. They have also used the name "amazing" in their pornography production for some time.

They gave me a ring, suggesting that my name interfered with their trademark, and suggesting that some kind of arrangement be made. I took a look at their web site, and was appalled - it's just a horrible, crummy place. So naturally I was in no mood to sell them amazing.com . They threatened to sic lawyers on me, and they proposed to meet me for a bite to eat to negotiate.

I eventually agreed, and after some thought sent them a lengthly memo regarding my feelings about their web site. Now, understand, I have nothing against sex sites, but I have plenty against awful sex sites like the aforementioned amazingsex. I also visited their LA headquarters and quite visibly took some digital photographs with my Canon XL1. Finally, I bought a couple of their videos, which are not nearly as bad as their web site, but still below the standards I'd like to see if I sold my domain. I quite loudly mentioned within the stores that I was buying the videos because of their attempt to grab my domain name. I got nothing but befuddled sympathy from the video store owners.

In the end, they melted away. I don't think they appreciated my suggestions about the quality of their web site!

I don't think these tactics would work with Yahoo, but they might help others involved in a similar dispute.

One of the best arguments that could be used to support their main cause (Marijuana use that is) is the fact that their response to this was a lot more lucid and concise than the initial message appears after you've looked at both sites. The first thing that occurs to me to ask when I see that lawsuit is "What were the Yahoo people smoking?" Evidently it wasn't Marijuana...

I am removing all links and references on my homepage to Yahoo, and will find another source for all of the services I, until today, used Yahoo for. I suggest anyone else who feels strongly that this action is inappropriate do the same.

So, in other words, we should meekly accept any behavior we find reprehensible simply because it is common?

This action goes way beyond "defending" their trademark -- they are using the American justice system, and indirectly my tax dollars, to intimidate a small site for the inexcusable crime of making a parody of their name. They don't have a case, and if this site were owned by an entity with significant capital, they would not be persuing this. This is intimidation under the guise of justice, pure and simple. And yes, if this becomes more and more common, I will be changing links more and more often. As often as is necessary to avoid supporting, even indirectly, corporations which feel this kind of behavior is appropriate. And BTW, I do not limit my displeasure to removing links. I also remove any business relationship of any kind to companies which I deem unethical. In other words, I put my money where my mouth is. If more of us did so, this kind of thing would be growing less, rather than more, common.

Your erronious assumption is that all, or even most, corporations vindictively persue anyone who uses a word or phrase slightly similar to their trademark. In addition, you erroniously assume Yahoo's action is a "defense" of their trademark, rather than an unwarrented attack on a little guy, who is exercising their constitutional right to parodize, which right has been confirmed time and time again in courts of law throughout the country. This attempt at intimidation is clearly financial, with Yahoo hoping that this particular "little guy" won't be able to afford to defend their rights under the law. Most companies do not engage in this sort of vindictive behavior, though of course if we all subscribe to the cynical apathy you espouse that will undoubtably change.

There are obviously too many lawyers in this country. This is one of the most ridiculous lawsuits I've ever heard of (not that I follow law very closely). A simple solution would be to move the server to another country, but that's probably not an option. It seems to me that if Yahoo! is really worried about this destroying their public images they can deal with it in the same way that W. R. Grace [grace.com] did with A Civil Action, a book that I had to read as a first year Engineering student at UVA for the fall of '97 (actually they dealt with an actual lawsuit, the book was based on this). Anyway in this book the company and one other are accused of polluting the town of Woburn's (a town in Mass.) water supply and raising the instance of leukemia. After a while the EPA relased a report saying that there was no way that W. R. Grace could have done anything to cause this. However there is still a movie that bears that name that is probably pretty bad for W. R. Grace's image. The put up a website [civil-action.com] devoted to debunk rumors of their actions.

I'm not saying that YaHooka has done anything like poison water (which neither they nor W. R. Grace did) or Yahoo! has either. But there are ways to handle things without rushing straight to court. Yahoo! could put up a website that explains their non-relationship with YaHooka.

OK, like, perhaps I've seen too much web porn for my own good, but the site amazingsex.com [amazingsex.com] seemed pretty tame. Not that I'm trying to call you a prude here, you may well have better taste than I. But they may well have changed the site around. In any event, it's cool that you stood up to them -- it's annoying that the corporations are trying to push around others.

"Another site using the name of the residence of the President of the United States provided pornographic material." Why couldn't they just say whitehouse.com [whitehouse.com]? They don't have to link it or anything, but trying to 'hide' the name like that makes it seem like they think their readers are stupid.

whats going on? i was doing some looking around the web, and i wanted to find the nutritional information on a beverage i happen to be fond of (Yoohoo!) but all i can seem to find is some stupid search engine. whats going on here?

what happened to the original spirit of the web? well it seems to have gone the way of crapitalism! there is plenty of room on the net for yahoo, yahooka and all other domains.....therefore this crap must stop messing up on our idea of the spirit of freedom of the web..... since freedom of the web is a human right

Pardon my ignorance, but can anyone even cite a legal precedent that proves that trademark law applies to domain names at all, let alone derivate domain names? What next, cease and desist letters claiming "Your 1-800 number differs from ours by only 1 digit, creating confusion in the minds of our customers. Therefore we demand that you immediately turn this number over to us!"

As I understand trademark law, "yahoo" is a standard english word which shouldn't be trademark able. "Yahoo!" may be trademarkable, and the Yahoo logo is certainly trademarkable. Perhaps a reasonable solution would be for YaHooka to drop the "!" from their logo.

Personally, I think anybody that would actually confuse the two sites would most likely be more interested in visiting YaHooka anyway. I never visit either anyway...